Introduction
By Resolution No. 0351-2023/Csd-Indecopi, Distinctive Signs Commission of INDECOPI (Instituto Nacional de Defensa de la Competencia y Protección de la Propiedad Intelectual – National Institute for the Defense of Competition and the Protection of Intellectual Property) resolved an opposition filed by the BCP (Banco de Crédito del Perú – Credit Bank of Peru) against the trademark application for registration of the firm “YAPA” and logo, made by the company Procustodia S.R.L. This case focused on the possible confusion and protection of trademark rights previously registered by the BCP, particularly its well-known trademark “YAPE.”
Background
The conflict arose when Procustodia S.R.L. requested the trademark registration of “YAPA” for goods in class 09 of the International Classification, related to e-devices and software. The BCP filed an opposition arguing that the proposed mark was graphically and phonetically similar to its trademark members, including “YAPE,” widely recognized in the financial sector for its use in mobile payment applications.
Arguments of the Parties
The BCP based its opposition, arguing that “YAPE” is a well-known trademark, widely recognized in the Peruvian market due to its continuous use, advertising campaigns, and direct association with digital financial services. According thereto, the graphic and phonetic similarity between “YAPE” and “YAPA” could confuse consumers, who could mistakenly relate both trademarks, which could lead to an undue exploitation of the reputation built by “YAPE.” On the other hand, Procustodia S.R.L. did not file a formal response to the oppositions, leaving the BCP the task of proving the notoriety of its trademark and the likelihood of confusion.
INDECOPI’s Resolution
The Commission evaluated the background, arguments, and evidence filed by the BCP, which included data on the notoriety of “YAPE” and the likelihood of confusion between the trademarks. As a result, it resolved the following:
- Declaration of notoriety: The notoriety of the trademark “YAPE” in the Peruvian market was reaffirmed, based on its wide recognition and use.
- Refusal of registration: The application for registration of “YAPA” was denied, considering that its use could mislead consumers and harm the BCP’s trademark rights.
| Firm requested | Registered Trademark |
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SUPERYAPA ENTEL |
Significance of the Decision
This case highlights INDECOPI’s commitment to defend intellectual property rights, particularly well-known trademarks. The ruling protects trademark owners and consumers, who could get confused by similarities between trademarks due to distinctive elements.
In addition, the decision sends a clear message about the significance of analyzing before registering trademarks, ensuring no conflicts with already established rights. For companies such as the BCP, the decision ratifies the value of investing to protect their trademark identity and strengthens their position in the market.
Conclusion
Resolution No. 0351-2023 underlines the relevance of conducting exhaustive prior studies before registering a trademark to avoid legal conflicts. In addition, it highlights the INDECOPI’s role in protecting recognized trademarks and ensuring consumer confidence in the products and services available in the market.
Source: RESOLUCION-No-0351-2023_CSD-INDECOPI-LPDerecho PDF